North Face Wants Court To Spank Butt Face

from the rear-ended-by-the-law dept

Remember South Butt? They're the relatively small and vulgarly-named clothing manufacturer North Face took to court over trademark infringement. Soon after, South Butt decided to use the lawsuit as a marketing ploy and then responded in court with a hysterical legal filing. We said at the time that moving forward with a lawsuit was a poor choice by North Face, serving only to fuel publicity for what it misguidedly saw as a competitor.

Proving that learning a lesson is very, very difficult, North Face has taken the former owners of South Butt to court again. What happened at the conclusion of the original lawsuit was South Butt agreed to drop their brand entirely as part of an injunction. Then, according to North Face, they jumped right back into their old shenannigan ways, forming the company Why Climb Mountains LLC and registering for a trademark on their new brand Butt Face. As if all of this wasn't funny enough, the following is taken from North Face's filing, in which they are asking for WCM LLC to be held in contempt, to recover costs, and for disgorgement for trademark violations:

"A survey conducted by plaintiff shows that approximately 35 percent of respondents identify The North Face as being associated with The Butt Face trademark when shown a sample of contempt respondents' T-shirts. Not only are contempt respondents now engaged in the widespread sale and promotion of The Butt Face branded goods, but Why Climb Mountains, LLC also has filed for registration of The Butt Face trademark with the United States Patent and Trademark Office."

If this is alledging brand confusion, I'm at a loss as to exactly how North Face went out and managed to collect what has to be the world's most hurried morons in a single room as a method for getting 35% of them to think Butt Face and North Face were the same thing. WCM's lawyer seems to feel similarly skeptical:

""The South Butt and Olop [South Butt's sister line] are genuinely committed to the fundamental concept that the consuming public is perfectly capable of discerning the difference between a direction point on a compass and that part of the body from which solid waste is evacuated," [Albert] Watkins said in a statement."

The other interesting tidbit in North Face's complaints is that they believe...wait for it...that WCM's owners are simply using the lawsuits filed against it as publicity. They reached the same conclusion as we had years ago. But, in an apparent attempt to test a theory called "litigation through stubborness", they filed suit and gave their adversaries more ammuntion for publicity. It would be as though I had an ant problem in my kitchen because I left some honey out on the counter and my response was to cover the counter in honey while complaining about the ants marching in.

In the end, North Face likely would have been far better served to ignore South Butt along with its new iteration, Butt Face. On the other hand, if they had, I never would have had the pleasure of writing the headline for this article. So, you know, thanks for that I guess.

Re:

spreading the word

Every time I see someone wearing a North Face something or other, I shout "South Butt". And then I have to explain the lawsuit. Now, every time I see North Face, I get to shout "Butt Face!". Thank you, North Face, I would not have known I could do that without your lawsuit.

I don't get what a random survey of respondents should conclude. If they are not people who have any interest in the activities that North Face's produces for, why would they have an interest in distinguishing between brands they have no interest in? If you show generic single color basketball shoes with 10 companie's logo's on them, and ask if people would think those brands are associated, you would get much more than 35%.

Also, if it happens to be that your customers are stupid and easily confused, is that something you really want to bring up in court as major part of your company's branding?

Re: Re: Re: Re: Re:

Apple will sue North Face, South Butt, and Butt Face

Apple will sue all of the companies mentioned... it owns the compass and all directions associated with it, as well as the numbers 1-360. Apple also owns "face" and all combinations of the word face, except Facebook.

Re:

no billable hours combined with a massive amount of entitlement.

No one else can use these things, we own them all!
How dare they make fun of our product!
How dare they use us suing them to get more press than we could ever hope to get!
How dare they capture a demographic who thinks we are stupid!
How dare they!!!!

Does North Face understand that they have now helped reinforce the idea that Butt Face makes products just as good as theirs?

I'm glad they filed this suit, otherwise i wouldn't have known the outcome of the original South Butt case that i read about a long time ago. I also wouldn't know about their new company and brand so it really worked out well for me. i'm sure WCM will be fine too so the only victim here is the North Face but since they are also the 'assailant', that cancels out and equals a victimless filing..